Christian Jansen et al.

Patent Trials and Appeals Board

Jul 23, 2019

14492354 - (D) (P.T.A.B. Jul. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/492,354 09/22/2014 Christian Jansen 15417-000009-US-REB 1664
7590 07/23/2019
Millman IP
Suite 1220, Box 60
401 Bay Street Street
Toronto, ONTARIO M5H2Y4
CANADA
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/23/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTIAN JANSEN and JOHN R. ANTCHAK1
____________________

Appeal 2018-008993
Application 14/492,354
Patent US 8,047,920 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG,
and CYNTHIA L. MURPHY, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Office Action (mailed September 14, 2016, “Final Act.”) rejecting
claims 16, 17, and 19–43 in the present reissue application filed on
September 22, 2014. The reissue application seeks to reissue U.S. Patent
8,047,920 B2 (“the ’920 patent”), issued November 1, 2011, based on
application 12/731,418, filed March 25, 2010. We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).

1 Collectively referred to as “Appellants.” The Appellants identify Litens
Automotive Partnership as the real party in interest. Appeal Brief (filed
March 28, 2017, “App. Br.”) 2.
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We AFFIRM.

The claimed invention is directed to a decoupler, independent claims
16 and 31 being reproduced below:
16. A decoupler comprising:
a hub that is rotatable about an axis;
a pulley disposed concentrically about the hub and
rotatable about the axis; and
a torsion spring and clutch assembly received between and
coupling the hub and the pulley, the torsion spring and clutch
assembly having a torsion spring coupled in series with a one-
way clutch assembly, the torsion spring being twist-able about
the axis to transmit rotary power between the pulley and the hub,
the one-way clutch assembly having an input member and an
output member, the one-way clutch assembly permitting
transmission of rotary power in a direction from the pulley to the
output member but not in a direction from the output member to
the pulley;
wherein a portion of the torsion spring and clutch
assembly is rotatable relative to the hub about the axis through a
predetermined angular range that is less than 360 degrees, and
wherein all rotary power transmitted through the torsion spring
and clutch assembly is transmitted to the hub through the torsion
spring when the portion of the isolator is not positioned at one
end of the predetermined angular range.

31. A decoupler comprising:
a hub that is rotatable about an axis;
a pulley disposed concentrically about the hub and
rotatable about the axis; and
an isolator received between and coupling the hub and the
pulley, the isolator having a torsion spring coupled in series with
a one-way clutch assembly, the torsion spring being at least
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partly formed of wire and having a plurality of helical coils, the
one-way clutch assembly having an input member and an output
member, the one-way clutch assembly permitting transmission
of rotary power in a direction from the pulley to the output
member, but not in a direction from the output member to the
pulley;
wherein a portion of the isolator is rotatable relative to the
hub about the axis through a predetermined angular range that
is less than 360 degrees, and
wherein positioning of the portion of the isolator at one
end of the predetermined angular range limits the rotary power
that is transmitted longitudinally along the wire of the torsion
spring to a predetermined maximum level.
App. Br., Claims App. A-1, A-5 (emphasis added).

REJECTIONS
1. The Examiner rejects claims 16, 17, and 19–43 under 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 2–3.
2. The Examiner rejects claims 16, 17, and 19–30 are rejected
under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
Final Act. 3–4.
3. The Examiner further rejects claims 16, 17, 23–30, 31–33, 36–
38, and 40–43 are rejected under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by Monahan et al. (US 6,394,248 B1, iss. May 28, 2002,
hereinafter “Monahan”). Final Act. 3–5.

PRINCIPLES OF LAW
35 U.S.C. § 112 states “[t]he [S]pecification shall contain a written
description of the invention.” 35 U.S.C. § 112 (pre-AIA) (first paragraph).
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The “test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The
“test requires an objective inquiry into the four corners of the [S]pecification
from the perspective of a person of ordinary skill in the art. Based on that
inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed.” Id. Although the exact terms need not be used in haec verba, the
Specification must contain an equivalent description of the claimed subject
matter. See Lockwood v. American Airlines, Inc., 107 F.3d at 1572.
Compliance with the written description requirement is a question of fact
which must be resolved on a case-by-case basis. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
35 U.S.C. § 112 also states that the claims must “particularly point[]
out and distinctly claim[] the subject matter” which the inventor regards as
the invention. 35 U.S.C. § 112 (pre-AIA), second paragraph. The essence
of the requirement under 35 U.S.C. § 112, second paragraph, that the claims
must be definite, is that the language of the claims must provide clarity to
those skilled in the art regarding the scope of the subject matter which the
claims encompass. See In re Hammack, 427 F.2d 1378 (CCPA 1970). The
test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether
those skilled in the art would understand what is claimed when the claim is
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read in light of the specification.” Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).

ANALYSIS
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments that the Appellants could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI
2010 (precedential)).

Rejection 1
The Examiner rejects claims 16, 17, and 19–43 for failing to comply
with the written description requirement, determining that the following
limitations in various claims of the reissue application are not shown or
disclosed in the original Specification, and thus, lack written descriptive
support and constitute new matter:
“isolator”;
“a predetermined annular range that is less than 360 degrees”;
“torsionally-resilient coupling”;
“first stop structure”;
“second stop structure”;
“slotted aperture”; and
“protrusion”.
Final Act. 2–3.
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The Examiner states that these claims were “not described in the
specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor . . . at the time the application was filed, had
possession of the claimed invention.” Final Act. 2.
The Appellants do not dispute that the above listed terms are not used
in the Specification. However, the Appellants argue that the Examiner
has merely identified various words and phrases that do not have
exact literal basis in the application and has not established (or
even asserted) that the identified words and phrases in the context
of the present claims were not in the possession of the inventor
at the time of the filing of the patent application as recognized by
a person of ordinary skill in the art.
App. Br. 12.
For the reasons discussed infra, we agree with the Examiner that some
of the terms identified lack proper written descriptive support, while as to
other terms, we agree with the Appellants that sufficient written descriptive
support has been provided.

“isolator”
Claim 16
As to claim 16, the Appellants note that the term “isolator” was used
only once, “had been inadvertently left in Claim 16 when an amendment was
filed,” and “was used in error.” App. Br. 8. The Appellants explain that
An after-final amendment was filed by the Appellant in an
attempt to solely correct this oversight (the proposed
amendment substituted the term ‘torsion spring and clutch
assembly’, which was already in use in at several places in
Claim 16, for the term ‘isolator’) - the Examiner, however,
declined to enter the amendment.
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App. Br. 8.
However, we note that the Examiner’s refusal to enter an amendment
is a matter that is petitionable to the Director, and is not an issue reviewable
by the Board.
The Appellants also assert that a person of ordinary skill would
understand, or “interpret,” the term “isolator” to mean “the torsion spring
and clutch assembly,” which is disclosed in the Specification. App. Br. 8.
The Appellants note that claim 16 further recites “a portion of the torsion
spring and clutch assembly is rotatable relative to the hub,” and asserts that
this is the “portion” referred to in claim 16 when it recites “the portion of the
isolator.” App. Br. 9. Based thereon, the Appellants argue that the
Examiner has “not presented a prima facie case of lack of written
description as the term ‘the isolator’ is properly interpreted as meaning ‘the
torsion spring and clutch assembly.’” App. Br. 8.
The Examiner responds that “the term ‘isolator’ remains to be new
mater [sic, matter] in that this term is not defined in the [S]pecification.”
Ans. 5. We agree with the Examiner, and are not persuaded by the
Appellants’ arguments.
The term “isolator” is used in claim 16 in a manner to convey a
device, i.e. as a noun. As such, there must be adequate disclosure of the
recited device in the Specification. However, it is not apparent where the
Specification provides sufficient disclosure to convey to a person of ordinary
skill in the art that the inventor had possession of a discernable device that
could be called an “isolator.” Although the Appellants assert that a person
of ordinary skill would understand “isolator” to mean “the torsion spring and
clutch assembly” disclosed in the Specification, we fail to see a reasonable
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basis for this assertion, especially considering that claim 16 itself recites “a
torsion spring and clutch assembly.” As such, a person of ordinary skill
would justifiably conclude that an “isolator” refers to a different device than
“a torsion spring and clutch assembly,” and in referring to the Specification,
would not find disclosure of the recited “isolator” device. In that regard, the
“torsion spring and clutch assembly” relied upon by the Applicant includes
not only the torsion spring, but also a clutch spring and a carrier.
Correspondingly, the Appellants’ assertion that a person of ordinary skill in
the art would understand “isolator” to mean “the torsion spring and clutch
assembly” in view of the Specification is not supported by, and is not
consistent with, the disclosure in the Specification.
Therefore, in view of the above considerations, the record supports a
finding that a person of ordinary skill in the art would not recognize that the
inventor possessed the invention as now claimed. The Appellants have not
provided any persuasive evidence to the contrary. Accordingly, we agree
with the Examiner that claim 16 lacks adequate written descriptive support
in the Specification for the limitation “isolator.”

Claim 31
As to claim 31, the Appellants argue that the claim itself defines the
limitation by stating that the isolator is “received between and coupling the
hub and the pulley, the isolator having a torsion spring coupled in series with
a one-way clutch assembly.” App. Br. 7. Based thereon, the Appellants
argue that
a person of ordinary skill in the art would appreciate that the
torsion spring (90) . . . and the one-way clutch form an
“isolator” that permits the hub (22) to overrun the pulley (50),
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as well as accommodates for (instantaneous) changes in the
speed of the pulley (50).
App. Br. 7–8 (citing Spec. col. 5, ll. 25–35; col. 6, ll. 46–50).
We again find the Appellants’ arguments unpersuasive for reasons
similar to those addressed above relative to claim 16. In addition, we
observe that claim 31 does not preclude the “isolator” from having other
components, thereby raising the question as to what actually constitutes the
device “isolator,” which, as noted, is not described or defined in the
Specification. Therefore, we agree with the Examiner that claim 31 lacks
adequate written descriptive support in the Specification for the limitation
“isolator.”

“a predetermined annular range that is less than 360 degrees”
As reproduced above, independent claim 16 also recites that “a
portion of the torsion spring and clutch assembly is rotatable relative to the
hub about the axis through a predetermined annular range that is less than
360 degrees.” Independent claim 31 includes similar “less than 360
degrees” language. The Examiner explains that “this angular range is not
discussed in the specification and it is unclear as to how one of ordinary skill
in the art would determine this range based on the drawings.” Ans. 5.
The Appellants argue that
Because of the boss and notch arrangement, a person of
ordinary skill in the art would understand that a) the angular
range of relative rotation is dictated by the size of the boss and
the size of the notch, and b) the maximum angular range of
relative rotation has to be less than 360 degrees (otherwise there
would be nothing for the boss to react against and thereby limit
relative rotation).
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App. Br. 9.
We agree with the Appellants. Figures 8 to 10 illustrate a boss and
notch arrangement referred to by the Appellants, and the Specification
discloses that:
Specifically, the anti-ramp up boss 77 travels within the slot 43
of the thrust plate 39 as the thrust plate 39 and carrier 75 rotate
relative to each other to accommodate changes in speed of the
pulley 50. The anti-ramp up boss 77 travels between opposing
sides of the slot 43 which define boundaries for a torque lock up
position and a ramp-up position. The anti-ramp up position is
shown in FIG. 9 and is defined as the position in which the anti-
ramp up boss 77 engages a first side 45, or anti-ramp up side, of
the slot 43 formed in the thrust washer 39 preventing the spring
90 from backing away from the abutment wall 89 associated with
the carrier 75. The torque lock up position of the carrier 75 and
thrust plate 39 is shown in FIG. 10 and is defined as the position
in which torsional deflection of the spring 90 due to rotation is
stopped by the interaction of the anti-ramp up boss 77 with a
second side 47, or torque limiting side, of the slot 43 formed in
the thrust washer 39.
Spec. col. 5, ll. 45–62 (emphasis added); Figs. 8–10.
The Specification also describes that the thrust plate is fixedly secured
on the outer mounting surface of the hub (Spec. col. 4, ll. 15–20), and that
anti-ramp up boss 77 of the carrier 75 engages the anti-ramp up
side 45 of the slot 43 formed in the thrust plate 39 in the anti-
ramp up position described above, preventing the spring 90 from
separating from the abutment wall 89 in the carrier 75 and
selectively prevent rotation of the spring 90 relative to the carrier
75 and hub 22.
Spec. col. 6, ll. 60–66 (emphasis added).
In view of the above disclosure and Figures 8–10, it would have been
readily apparent to a person of ordinary skill in the art that the angular range
of rotation of the torsion spring 90, which is part of the torsion spring and
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clutch assembly, is limited by the size of the notch and the size of the boss
movable therein to less than 360 degrees. Thus, we agree with the
Appellants that adequate written disclosure is provided by the Specification
reasonably conveys to those skilled in the art that the inventor had
possession of the limitation “a portion of the torsion spring and clutch
assembly is rotatable relative to the hub about the axis through a
predetermined annular range that is less than 360 degrees.”

“torsionally-resilient coupling”
Claim 17 depends from claim 16 recites that “rotary power
transmitted through the torsionally-resilient coupling is limited to a
predetermined maximum torque when the portion of the torsion spring and
clutch assembly is positioned at the one end of the predetermined angular
range.” App. Br., Claims App. A-2.
The Appellants simply assert that “a person of ordinary skill in the art
would appreciate that the torsion spring (90) is a type of torsionally-resilient
coupling.” App. Br. 10. However, this argument is unpersuasive for a
variety of reasons. The recitation “the torsionally-resilient coupling” is used
in the claim to refer to a device, but this term not only lacks proper
antecedent basis in the claim, it is also not used in the Specification. In
addition, claim 16 from which claim 17 depends explicitly recites “a torsion
spring” such that a person of ordinary skill would justifiably presume that a
“torsionally-resilient coupling” refers to a different device than a “torsion
spring,” and in referring to the Specification, would not find disclosure of
the recited “torsionally-resilient coupling” device. Considering that
“torsionally-resilient coupling” is not used in the Specification, and the plain
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and ordinary meaning of “coupling,”2 does not include a spring,3 we are not
persuaded by the assertion that a person of ordinary skill would understand
the term to refer to a torsion spring, or any spring for that matter. See In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (words of the claim must be given
their plain meaning unless the plain meaning is inconsistent with the
Specification).
Under such facts, we find that a person of ordinary skill in the art
would not recognize that the inventor possessed the invention as now
claimed. Accordingly, we agree with the Examiner that the limitation
“torsionally-resilient coupling” lacks adequate written descriptive support in
the Specification.

“first stop structure” and “second stop structure”
Dependent claims 23–25 and 37–39 recite the limitations “first stop
structure” and/or “second stop structure.” App. Br., Claims App. A-3, A-5,
A-6. The Examiner explains that “it is unclear as to what the applicant
considers these stop structures to be in Figures 9, 10, 13 and 14 as the stop
structures are not discussed in the specification. . . . To utilize the figures to
determine these structures would be a matter of conjecture.” Ans. 5. The
Appellants argue that “a person of ordinary skill in the art would appreciate

2 Coupling: noun 2: a device that serves to connect the ends of adjacent
parts or objects. www.merriam-webster.com/dictionary/coupling (last
visited July 13, 2019).

3 Spring: noun 4: an elastic body or device that recovers its original shape
when released after being distorted. www.merriam-
webster.com/dictionary/spring (last visited July 13, 2019). In that regard,
we note that this definition does not refer to a “coupling.”
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that the boss (77) and the annular thrust plate (39) are examples of first and
second stop structures.” App. Br. 10.
We agree with the Appellants. As discussed above relative to the
“less than 360 degrees” limitation, the Specification discloses that the boss
77 movably received within the notch 43 provided on the thrust plate 39
function together to stop rotation of the spring of the torsion spring and
clutch assembly relative to the hub. Therefore, we agree with the Appellants
that adequate written disclosure is provided by the Specification for the
limitations “first stop structure” and “second stop structure.”

“slotted aperture”
Dependent claims 25 and 39 recite that one of the above noted “first
stop structure” and “second stop structure” comprises a “slotted aperture.”
App. Br., Claims App. A-3. The Appellants assert that “the notch (43) in the
annular thrust plate (39) is an example of a ‘slotted aperture[.]’ See Fig. 8.”
App. Br. 11. The Examiner responds that “the slotted aperture is not
discussed in the [S]pecification. To utilize the figures to determine these
structures would be a matter of conjecture.” Ans. 5. We are not persuaded
by the Appellants’ assertion.
While Figure 8 does illustrate an elongated notch formed along the
peripheral edge of the thrust plate, it does not illustrate a “slotted aperture.”
The ordinary and plain meaning of the term “aperture” is that of an opening
or a hole that is defined by surrounding material.4 We find that a person of
ordinary skill in the art would not understand a notch that cuts out a

4 Aperture: noun 1: an opening or open space : HOLE. www.merriam-
webster.com/dictionary/aperture (Last visited July 15, 2019).
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peripheral edge of a disc-shaped object (i.e., thrust plate) to be an aperture as
this term is ordinarily understood. Therefore, we find that a person of
ordinary skill in the art would not recognize that the inventor possessed the
invention as now claimed, and agree with the Examiner that claims 25 and
39 lack adequate written descriptive support in the Specification for the
limitation “slotted aperture.”

“protrusion”
Dependent claims 25, 29, and 39 also recite “a protrusion” that is
recited as being received in a slotted aperture. The Appellants argue that
“the boss (77) is an example of a ‘protrusion[.]’ See Fig. 8.” App. Br. 11.
The Examiner responds that “[i]f applicant wished to claim the ‘boss’
instead of a protrusion, a ‘boss’ should have been claimed. A boss is not the
same as a protrusion. . . . To utilize the figures to determine these structures
would be a matter of conjecture.” Ans. 5. We do not agree with the
Examiner because a boss is a type of protrusion.5 Therefore, we agree with
the Appellants that adequate written disclosure is provided by the
Specification for the limitation “protrusion.”

Conclusion as to Rejection 1
Therefore, in view of the above, we disagree with the Examiner that
the limitations “a predetermined annular range that is less than 360 degrees;”
“first stop structure;” “second stop structure;” and “protrusion,” lack
adequate written descriptive support. However, we agree with the Examiner

5 Boss: noun 1a: a protuberant part or body. www.merriam-
webster.com/dictionary/boss (Last visited July 15, 2019).
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that the limitation “isolator” recited in independent claims 16 and 31 (as well
as other dependent claims) lack adequate written descriptive support.
Accordingly, we affirm this rejection on that basis as to claims 16, 17, and
19–43. We also affirm this rejection as to claims 17, 25, and 39 on the bases
that “torsionally-resilient coupling” and “slotted aperture” also lack adequate
written descriptive support.

Rejection 2
The Examiner rejects claims 16, 17, and 19–30 as being indefinite for
the limitation “the isolator” in claim 16, and noting that this recitation “lacks
clear antecedent basis in the claim.” Final Act. 3. The Examiner also rejects
claims 17, and 19–30 as being indefinite “due to their dependency on claim
16.” Final Act. 3.
The Appellants again assert that the Examiner “improperly denied
entry of an amendment that would correct an obvious error.” App. Br. 12.
However, as noted above, the Examiner’s refusal to enter an amendment is
not an issue reviewable by the Board.
Substantively, the Appellants argue that “the Examiner has not
established that one of ordinary skill in the pertinent art, when reading the
claims in light of the supporting [S]pecification, would not have been able to
ascertain with a reasonable degree of precision and particularity the
particular area set out and circumscribed by the claims.” App. Br. 14.
However, as discussed above, the term “isolator” is used in claim 16 in a
manner to convey a device, and it is not sufficiently clear what the term
“isolator” means in view of the fact that it is not used or defined in the
Specification. Thus, we disagree with the Appellants’ assertion that a person
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of ordinary skill would understand “isolator” to mean “the torsion spring and
clutch assembly” considering that the claims also explicitly recite “torsion
spring and clutch assembly,” thereby indicating that these are different
components.
The Appellants further argue that “the claim terms are interpreted
based on the prosecution history. . . . In the present situation, Appellants’
remarks in the After-Final Amendment clearly establishes that ‘the isolator’
is the ‘torsion spring and clutch assembly.’” App. Br. 13. The Appellants
also argue that “the claims can be considered definite and clear to one of
ordinary skill in the art even though the antecedent basis in the claims is not
‘exact.’” App. Br. 13.
We generally agree that improper antecedent basis is not necessarily
dispositive as to definiteness. Energizer Holdings Inc. v. United States ITC,
435 F.3d 1366, 1370–71 (Fed. Cir. 2006) (“In Bose Corp. v. JBL, Inc., 274
F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the absence of
explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.’”).
However, as discussed above, the problems with the term “isolator” in claim
16 go beyond a lack of antecedent basis.
As to the Appellants’ assertion that the remarks in the After-Final
Amendment establishes that “‘the isolator’ is the ‘torsion spring and clutch
assembly’” (App. Br. 13), we remain unpersuaded. Prosecution history is
useful for construing issued claims when the prosecution record is closed
such that no further interpretive remarks can be entered into the prosecution
record. In contrast, this term was introduced in the reissue application, and
the remarks of the Appellants were made during the prosecution of the
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present reissue, not during the prosecution of the ’920 Patent. The
prosecution record as to the present reissue application is still open by virtue
of this appeal. Cf. Microsoft v. Proxyconn, 789 F.3d 1292, 1298 (Fed. Cir.
2017) (“The PTO should also consult the patent’s prosecution history in
proceedings in which the patent has been brought back to the agency for a
second review. See Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 977
(Fed. Cir. 2014)”).
The Appellants cite to two court cases in support of its position. App.
Br. 13 (citing Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1218 (Fed.
Cir.) and In re Dash, Civ. App. 04-1145, 2004 WL 2829039 (Fed. Cir. 2004)
(unpublished)). However, Amgen pertained to interpreting claims of two
patents in a validity and infringement action. Amgen, 927 F.2d at 1202–03.
Prosecution records of issued patents are closed. As to Dash, the rejection at
issue pertained to, inter alia, the lack of enablement. 2004 WL 2829039 *1.
Although in Dash, the court agreed with the Board’s interpretation of the
preamble in view of “the language of the claims in light of the specification
and prosecution history,” we do not understand the court’s agreement with
the Board’s interpretation as holding that assertions of the Appellants made
during prosecution controls when the prosecution record is not closed. Such
a rule would be antithetical to the broadest reasonable interpretation standard
applied by the Patent Office in interpreting claims during prosecution. See
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(claims are to be given their broadest reasonable interpretation consistent
with the Specification, reading claim language in light of the specification as
it would be interpreted by one of ordinary skill in the art). Moreover, such a
rule would undermine the important statutory mandate of the Patent Office
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in issuing patents with claims that are precise, clear, correct, and
unambiguous, by allowing for ambiguous claims, which meanings can only
be ascertained by combing through the prosecution history record. In re
Zletz, 893 F.2d at 321–22 (Fed. Cir. 1989) (“An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.”).
Therefore, in view of the above, we affirm the Examiner’s rejection of
claims 16, 17, and 19–30 as being indefinite.

Rejection 3
The Examiner rejects claims 16, 17, 23–30, 31–33, 36–38, and 40–43
as anticipated by Monahan. Final Act. 4. As to claim 16, the Examiner
finds that Monahan discloses “a decoupler pulley having a one-way clutch
22 and a torsion isolator (see Fig. 3) including springs 33 located within a
plurality of segmented partitions that limit the relative rotation of the shells
25 and 45 to less than 360 degrees.” Final Act. 4. As to claim 31, the
Examiner further finds that “the power is transmitted longitudinally through
the wires of the springs 33 of Monahan.” Final Act. 4.

Claims 16, 17, and 23–30
The Appellants argue, inter alia, that Monahan does not disclose a
“‘torsion spring and clutch assembly’ having a torsion spring, which is twist-
able about the rotational axis of the hub to transmit rotary power between the
pulley and the hub, in series with a one-way clutch.” App. Br. 15. In
particular, the Appellants argue that the device of Monahan “does not
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employ a torsion spring in series with the (wrap spring) one-way clutch.
Rather, Monahan et al. employs a plurality of coil springs that compress in
an axial manner rather than twist when rotary power is transmitted between
the pulley and the hub.” App. Br. 15.
In response, the Examiner explains that
the claims do not recite a torsion spring that twists.
Specifically, the claim does not recite a torsion spring that is
coaxial with the wrap/clutch spring. The claim recites a torsion
spring “being twistable about the axis to transmit rotary
power[.]” It is noted that it is unclear as to what direction is
meant by []“about the axis”. The compressions springs when
engaged to transmit power are “twistable about the axis[.]”
Further, the torsion springs 33 and the one way clutch spring 22
are in series.
Ans. 5.
We agree with the Appellants. The wrap spring 22 of Monahan
corresponds to the recited one-way clutch (see windings in Fig. 2), but the
shelves 25, 45 of Monahan are biased by compression springs 33. Monahan,
col. 7, ll. 36–50; col. 8, ll. 1–35; and Figs. 3–5. The compression springs 33
of Monahan function to attain results similar to that of the recited torsion
spring of claim 16. In particular, Monahan discloses that the compression
springs 33 bias the relative position of the shelves 25, 45 such that “energy
during transient torque or resonant conditions is absorbed and compliance in
the over-running clutch assembly is created, thereby softening the transition
between the ‘unlocked’ state and the ‘locked’ state of the clutch pulley 10.”
Monahan, col. 8, ll. 30–35. The Examiner is correct that the claims do not
recite a torsion spring that twists, or that the torsion spring is coaxial with
the one-way clutch spring, and functionally, the one-way clutch of Monahan
appears to be in series with its wrap spring.
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However, such operational similarities does not address the fact that
Monahan does not include a torsion spring as recited in independent claim
16, but instead, includes a plurality of compression springs 33. To establish
anticipation, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). In other
words, “there must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1576 (Fed. Cir. 1991). A person of ordinary skill in the
mechanical arts recognize and appreciate the structural and functional
differences between a torsion spring (as recited in claim 16) and
compression springs as disclosed in Monahan.
The Examiner asserts that the limitation requiring the torsion spring to
be “twist-able about the axis” is unclear because the direction of “about the
axis” is not clear, and that the compressions springs of Monahan are “twist-
able about the axis.” Ans. 5. However, claim 16 clearly recites that both the
hub and the pulley are rotatable about the recited axis, and accordingly, it is
clear that the recited torsion spring is “twist-able” about this same axis. In
addition, the Examiner’s assertion that the compression springs of Monahan
twist about the recited axis is not reasonable because the compression
springs compress radially about the axis. Therefore, in view of the above
considerations, we reverse the Examiner’s anticipation rejection of
independent claim 16, and claims 17 and 23–30 that ultimately depend from
claim 16.

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Claims 31–33, 36–38, and 40–43
The Appellants submit substantially the same arguments as to why
Monahan does not anticipate these claims. App. Br. 17–18. Indeed,
independent claim 31 also recites “a torsion spring coupled in series with a
one-way clutch assembly.” App. Br., Claims App. A-5. Therefore, for
reasons similar to those discussed above relative to independent claim 16,
we reverse the anticipation rejection of independent claim 31, and of claims
32, 33, 36–38, and 40–43 that ultimately depend from claim 31.

CONCLUSIONS
1. The Examiner’s rejection of claims 16, 17, and 19–43 for
failing to comply with the written description requirement is affirmed.
2. The Examiner’s rejection of claims 16, 17, and 19–30 as being
indefinite is affirmed.
3. The Examiner’s rejection of claims 16, 17, 23–30, 31–33, 36–
38, and 40–43 as anticipated by Monahan is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED